DETAILED ACTION
This Office action is responsive to the following communication received:
07/24/2024 – Application papers received, including Power of Attorney; IDS (4 statements);
10/09/2024 – Response to Notice to File Missing Parts;
10/24/2024 – IDS; and
04/15/2025 – Preliminary amendment.
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Continuation Data
This application is a CON of 18/661,362 05/10/2024 which is a CON of 17/389,167 07/29/2021 ABN which is a CIP of 17/124,134 12/16/2020 PAT 12121780.
Status of Claims
Claims 1-20 have been cancelled.
Claims 21-40 remain pending.
Information Disclosure Statement
The IDS, received 07/24/2024, and including 13 pages, contains a citation, the relevance of which to the claimed invention is not readily understood. Specifically, Citation No. 23, identified as USPN RE41577, with a patent date of August 24, 2010 and a patentee named McLean et al, is titled “High Power Density Fuel Cell Stack Using Micro Structured Components”. This citation has been ‘considered’ only to the extent that the USPN, patent date and name of patentee match the PTO records.
One of the IDS papers, received 07/24/2024, contains a citation to a Non-Patent Literature Document styled “Office Action for Japanese Patent Application No. 2021-196622 dated October 26, 2022”. A copy of this citation appears to be missing, as the citation only shows blank pages. It is noted that this citation was previously-cited in the prior 17/389,167 application and has nonetheless been considered. For completeness and convenience, the applicant should consider furnishing another copy of this citation for placement in the current record.
The IDS papers, received 07/24/2024, repeat the citation of two U.S. Applications under Non-Patent Literature Documents, including “U.S. Application No. 17/124,134 filed on December 16, 2020” along with “U.S. Patent Application No. 17/006,561, filed August 28, 2020”. In order to prevent confusion or duplicate printing during any post-allowance processing, an occurrence of one of the duplicate citations for each U.S. Application has been lined-through.
Priority
This application repeats a substantial portion of prior Application No. 17/389,167, fled 07/29/2021, and adds disclosure not presented in the prior application. Specifically, this application adds subject matter to claims 33-37 of the disclosure, via the preliminary amendment of 04/15/2025, and reciting various features of the first paths and the second paths of the ablation pattern of peaks and valleys. This subject matter is not presented in the prior 17/389,167 application. The subject matter recited in claims 33-37 appears initially in parent Application No. 18/661,362, filed 05/10/2024.
Because this application names the inventor or at least one joint inventor named in the prior application, it may constitute a continuation-in-part of the prior application. Should applicant desire to claim the benefit of the filing date of the prior application, attention is directed to 35 U.S.C. 120, 37 CFR 1.78, and MPEP § 211 et seq. The presentation of a benefit claim may result in an additional fee under 37 CFR 1.17(w)(1) or (2) being required, if the earliest filing date for which benefit is claimed under 35 U.S.C. 120, 121, 365(c), or 386(c) and 1.78(d) in the application is more than six years before the actual filing date of the application.
In view of the observation above with respect to priority, the effective filing date of claims 33-40 has been established to be equal to the actual filing date of the parent application 18/661,362, namely 05/10/2024. Here, dependent claims 33-37 include subject matter first introduced into the disclosure via the preliminary amendment of 04/15/2025 of the instant application and initially finding support in parent application 18/661,362. Claims 38-40 depend directly or indirectly from claim 33 and thus share the effective filing date of the parent 18/661,362 application. See MPEP 2152.01.
Moreover, the subject matter recited in claims 21-32 finds support in the prior application 17/389,167, filed 07/29/2021, and thus the effective filing date of claims 21-32 has been determined to be equal to the filing date of the prior 17/389,167 application, namely 07/29/2021. See MPEP 2152.01.
Specification - Objections
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). No new matter is to be added. Correction of the following is required:
The specification lacks proper antecedent basis for the following terms / phrases:
Claim 33: “an ablation pattern of peaks and valleys that comprises first paths spaced apart relative to each other and second paths spaced apart relative to each other and intersecting the first paths at spaced apart locations; each one of the first paths and the second paths has a depth, relative to the peaks, that varies along its length; and the depths of the first paths and the second paths are greater at the spaced apart locations where the first paths and the second paths intersect than where the first paths and the second paths do not intersect”;
Claim 34: “wherein the depths of the first paths and the second paths, at the spaced apart locations where the first paths and the second paths intersect, are at least 1.5 times the depths of the first paths and the second paths where the first paths and the second paths do not intersect”;
Claim 35: “wherein the depth of each one of the first paths and the second paths varies between, and inclusive of, 5 micrometers and 100 micrometers” (emphasis added). Although the claimed range for the depth is disclosed in the specification, the range is not specifically disclosed with respect to any first and second paths;
Claim 36: “wherein the depth of each one of the first paths and the second paths varies between, and inclusive of, 20 micrometers and 50 micrometers” (emphasis added). Although the claimed range for the depth is disclosed in the specification, the range is not specifically disclosed with respect to any first and second paths;
Claim 37: “wherein each one of the peaks is interposed between a corresponding two of the first paths an between a corresponding two of the second paths”.
Specification - Abstract
Applicant is reminded of the proper content of an abstract of the disclosure.
A patent abstract is a concise statement of the technical disclosure of the patent and should include that which is new in the art to which the invention pertains. The abstract should not refer to purported merits or speculative applications of the invention and should not compare the invention with the prior art.
If the patent is of a basic nature, the entire technical disclosure may be new in the art, and the abstract should be directed to the entire disclosure. If the patent is in the nature of an improvement in an old apparatus, process, product, or composition, the abstract should include the technical disclosure of the improvement. The abstract should also mention by way of example any preferred modifications or alternatives.
Where applicable, the abstract should include the following: (1) if a machine or apparatus, its organization and operation; (2) if an article, its method of making; (3) if a chemical compound, its identity and use; (4) if a mixture, its ingredients; (5) if a process, the steps.
Extensive mechanical and design details of an apparatus should not be included in the abstract. The abstract should be in narrative form and generally limited to a single paragraph within the range of 50 to 150 words in length.
See MPEP § 608.01(b) for guidelines for the preparation of patent abstracts.
Applicant is reminded of the proper language and format for an abstract of the disclosure.
The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words in length. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details.
The language should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be implied, such as, “The disclosure concerns,” “The disclosure defined by this invention,” “The disclosure describes,” etc. In addition, the form and legal phraseology often used in patent claims, such as “means” and “said,” should be avoided.
The abstract of the disclosure is objected to because the abstract fails to describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details. The Abstract details a method, but does not mention even the basic concept(s) of the currently claimed invention. A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
Drawings
Applicant’s communication styled “Response to Notice to File Missing Parts”, received 10/09/2024, and responding to the Notice to File Missing Parts, mailed 08/09/2024, is acknowledged. The applicant alleges that Figure 36, while including a black background, is nonetheless on a white sheet of paper and thus complies with 37 CFR 1.84(e).
At this time, the drawings are acceptable for examination purposes only. A final determination of whether or not the quality and clarity of any drawings are acceptable for publishing will be made at the time of allowance. See MPEP 608.02(z) and 1302.05.
Further questions about the contents of the Notice to File Missing Parts and the requirements it sets forth should be directed to the Office of Data Management, Application Assistance Unit, at (571) 272-4000 or (571) 272-4200 or 1-888-786-0101.
The drawings, received 07/24/2024, are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the “first paths” and “second paths”, recited throughout claims 33-37, as well as the “first paths spaced apart relative to each other and second paths spaced apart relative to each other and intersecting the first paths at spaced apart locations”, as recited in claim 33, must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
FOLLOWING IS AN ACTION ON THE MERITS:
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
The Supreme Court in KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007) identified a number of rationales to support a conclusion of obviousness which are consistent with the proper "functional approach" to the determination of obviousness as laid down in Graham. The key to supporting any rejection under 35 U.S.C. 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious. The Supreme Court in KSR noted that the analysis supporting a rejection under 35 U.S.C. 103 should be made explicit. In Ball Aerosol v. Ltd. Brands, 555 F.3d 984, 89 USPQ2d 1870 (Fed. Cir. 2009), the Federal Circuit offered additional instruction as to the need for an explicit analysis. The Federal Circuit explained that the Supreme Court’s requirement for an explicit analysis does not require record evidence of an explicit teaching of a motivation to combine in the prior art.
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"[T]he analysis that "should be made explicit" refers not to the teachings in the prior art of a motivation to combine, but to the court’s analysis. . . . Under the flexible inquiry set forth by the Supreme Court, the district court therefore erred by failing to take account of 'the inferences and creative steps,' or even routine steps, that an inventor would employ and by failing to find a motivation to combine related pieces from the prior art." Ball Aerosol, 555 F.3d at 993, 89 USPQ2d at 1877.
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The Federal Circuit’s directive in Ball Aerosol was addressed to a lower court, but it applies to Office personnel as well. When setting forth a rejection, Office personnel are to continue to make appropriate findings of fact as explained in MPEP § 2141 and § 2143, and must provide a reasoned explanation as to why the invention as claimed would have been obvious to a person of ordinary skill in the art at the time of the invention. This requirement for explanation remains even in situations in which Office personnel may properly rely on intangible realities such as common sense and ordinary ingenuity.
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I. EXEMPLARY RATIONALES
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Exemplary rationales that may support a conclusion of obviousness include:
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(A) Combining prior art elements according to known methods to yield predictable results;
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(B) Simple substitution of one known element for another to obtain predictable results;
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(C) Use of known technique to improve similar devices (methods, or products) in the same way;
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(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
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(E) "Obvious to try" – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
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(F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art;
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(G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention.
Claims 21-22 and 27-28 are rejected under 35 U.S.C. 103 as being unpatentable over US PUBS 2018/0154224) to Bovee et al (hereinafter referred to as “Bovee”) in view of US PUBS 2019/0033231 to Connell et al (hereinafter referred to as “Connell”).
As to claim 21, Bovee shows a golf club head (100), comprising: a body (FIG. 1A) comprising a crown opening and a crown-opening recessed ledge adjacent to and defining a periphery of the crown opening, wherein the crown-opening recessed ledge is made of a metallic material (i.e., paragraphs [0335] – [0338]) and noting titanium material) and comprises a bonding surface along at least a forward portion of the crown-opening recessed ledge (FIG. 4B); a crown insert (442) bonded to the bonding surface of the crown-opening recessed ledge via an adhesive (i.e., paragraphs [0059], [0088], [0105], [0114], and [0144]), wherein the crown insert (442) is made of a composite material. Although carbon-fiber reinforced polymer is not specifically mentioned as a material for the crown insert, Bovee notes the commonness of using carbon fiber reinforced polymer in the construction of golf club heads in paragraph [0005] and further notes that the crown insert may comprise a composite material for weight savings (i.e., paragraph [0058]. Thus, it would have been obvious to one of ordinary skill in the art and before the effective filing date of the claimed invention to have modified the club head in Bovee by fabricating the crown insert from carbon fiber reinforced polymer material in order to reduce the club head weight at the crown and provide discretionary mass to be used elsewhere on the club head for improved club head performance. Moreover, selection of a known material such as carbon fiber reinforced polymeric material to take advantage of lightweight characteristics and strength of this material would have been obvious to one of ordinary skill in the art and before the effective filing date of the claimed invention. See MPEP 2144.07: The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) (Claims to a printing ink comprising a solvent having the vapor pressure characteristics of butyl carbitol so that the ink would not dry at room temperature but would dry quickly upon heating were held invalid over a reference teaching a printing ink made with a different solvent that was nonvolatile at room temperature but highly volatile when heated in view of an article which taught the desired boiling point and vapor pressure characteristics of a solvent for printing inks and a catalog teaching the boiling point and vapor pressure characteristics of butyl carbitol). See also In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960) (selection of a known plastic to make a container of a type made of plastics prior to the invention was held to be obvious); Ryco, Inc. v. Ag-Bag Corp., 857 F.2d 1418, 8 USPQ2d 1323 (Fed. Cir. 1988) (Claimed agricultural bagging machine, which differed from a prior art machine only in that the brake means were hydraulically operated rather than mechanically operated, was held to be obvious over the prior art machine in view of references which disclosed hydraulic brakes for performing the same function, albeit in a different environment.).
Bovee also shows a flight control technology (FCT) system (i.e., an adjustable hosel assembly is provided to assist in adjusting lie and loft; see paragraphs [0016], [0070] and [0094]). In addition, Bovee includes a mass receptacle (1060; FIG. 10A) proximate to a rearward-most portion of the crown-opening recessed ledge; and a mass element (1062) coupled to the mass receptacle (1060) below the crown-opening recessed ledge (FIG. 10B) and below a center of gravity (200) of the golf club head; wherein the crown-opening recessed ledge is non-planar (i.e., FIG. 1E clearly shows that the crown is curved and that the insert follows the curved configuration of the crown surface and as such the recessed ledge upon which the crown insert sits atop is also curved to match the curved (non-planar) configuration of the crown and the crown insert.
Bovee does not explicitly detail “laser-ablated”, when referring to the characteristics of the bonding surface of the crown-opening recessed ledge. Connell shows it to be old to prepare a substrate, prior to the application of an adhesive, using a laser ablation process for enhanced adhesion between mating parts (i.e., see paragraph [0018]). The laser ablation process provides a more thorough ‘cleaning’ of the substrate to be bonded. In view of the teaching in Connell, it would have been obvious to one of ordinary skill in the art and before the effective filing date of the claimed invention to have modified the club head in Bovee by preparing the bonding surface of the crown-opening recessed ledge through laser ablation (i.e., the laser ablation provides a physical patterned network of ‘lines’ and/or peaks and valleys), the motivation being to better prepare the ledge for accepting an adhesive and the insert for a stringer hold between the ledge and the insert.
As to claim 22, a rearward-most portion of the crown-opening recessed ledge is formed of metal. The body in Bovee, which serves to form the recessed ledge, is made of metal material (i.e., paragraph [0119]).
As to claim 27, as modified by Connell, the crown insert in Bovee would have included a crown-insert laser-ablated bonding surface formed in an interior surface of the crown insert; and wherein the crown-insert laser-ablated bonding surface is bonded to the laser-ablated bonding surface of the crown-opening recessed ledge via the adhesive (i.e., see paragraphs [0059], [0088], [0110] – [0111]; and [0114] – [0115] in Bovee.
As to claim 28, the crown-insert laser-ablated bonding surface is formed in only an outer peripheral portion of the interior surface of the crown insert. As shown in FIG. 4B, 4D and 10B of Bovee, the attachment surface for the crown insert includes a perimeter portion of the body. Thus, as modified by Connell, it is clear that the interior surface of the crown insert in Bovee about an outer peripheral portion of the crown insert would be bonding to the recessed ledge of the main body.
Claims 29-30 are rejected under 35 U.S.C. 103 as being unpatentable over US PUBS 2018/0154224) to Bovee et al (hereinafter referred to as “Bovee”) in view of US PUBS 2019/0033231 to Connell et al (hereinafter referred to as “Connell”) and also in view of US PUBS 2015/0196972 to Wohl JR. et al (hereinafter referred to as “Wohl”).
As to claims 29 and 30, Bovee, as modified by Connell, does not explicitly detail that “the laser-ablated bonding surface of the crown-opening recessed ledge comprises a first laser ablation pattern; the crown-insert laser-ablated bonding surface of the crown insert comprises a second laser ablation pattern; and the first laser ablation pattern is different than the second laser ablation pattern” (claim 29) nor that “the laser-ablated bonding surface of the crown-opening recessed ledge comprises a first laser ablation pattern; the crown-insert laser-ablated bonding surface of the crown insert comprises a second laser ablation pattern; and the first laser ablation pattern is the same as the second laser ablation pattern” (claim 30). Wohl teaches that laser ablation patterning may result in multiple first parallel lines transcribed in a surface of a substrate, with other second parallel lines transcribed in the surface, with at least some of the second parallel lines being oriented perpendicular to the first parallel lines, and thus essentially teaches first and second paths that are either intersecting and/or not intersecting (i.e., see paragraph [0031]). Given the teachings in Wohl, it would have been obvious to one of ordinary skill in the art and before the effective filing date of the claimed invention to have modified the device in Bovee, as modified by Connell, by incorporating appropriate first and second laser-ablation patterns, with there being a reasonable expectation of success that the patterning provided to the ablated surface would have promoted enhanced adhesion between the a first- part bonding surface of the crown and a second-part ablated bonding surface of the crown insert.
Claims 23-25 and 31-32 are rejected under 35 U.S.C. 103 as being unpatentable over US PUBS 2018/0154224) to Bovee et al (hereinafter referred to as “Bovee”) in view of US PUBS 2019/0033231 to Connell et al (hereinafter referred to as “Connell”) and also in view of US PUBS 2010/0151960 to Wahl et al (hereinafter referred to as “Wahl”) and also in view of US PUBS 2016/0346640 to Boggs et al (hereinafter referred to as “Boggs”)
As to claim 23, Bovee further comprises a strike face (109). However, Bovee does not explicitly detail “a total surface area of the strike face is at least 3,300 square millimeters (mm²) and less than 4,300 mm²”. Wahl show it to be old in the art to dimension a strike face with an area in a range of about 2,700 square millimeters (mm²) to about 5,000 mm² (i.e., paragraph [0075]). A larger strike face area expands the sweet spot and enables the club head designer to redistribute weight to peripheral portions of the club head. In view of the teaching in Wahl and the above reasoning, it would have been obvious to one of ordinary skill in the art and before the effective filing date of the claimed invention to have modified the club head in Bovee by providing a total surface area of the strike face is at least 3,300 square millimeters (mm²) and less than 4,300 mm²” in order to enlarge the sweet spot of the club head for improved club head performance.
Bovee also lacks the feature “the laser-ablated bonding surface has a surface area between 800 mm² and 2,880 mm²”. Here, Boggs teaches that an acceptable bond strength between mating club head parts is achieved when the total surface area of the joint(s) among the various body sections is between 1300 mm² and 3000 mm², which represents the combined surface area of both surfaces of a front section and a rear section of a club head body when bonded together (i.e., paragraph [0036], [0040] and [0044] in Boggs). Essentially, Boggs may be construed as showing a surface area of the bonding surface as being between about 650 mm² to 1500 mm², which would account for the surface area of one of two surfaces of the front section or the rear section of the club head body bonded together. Here, Boggs makes it clear that an adequate bonding area helps reduce the chance of shear failure along the joint. In view of the teaching in Boggs, it would have been obvious to one of ordinary skill in the art and before the effective filing date of the claimed invention to have modified the club head in Bovee by providing that the laser-ablated bonding surface has a surface area between 800 mm² and 2,880 mm² in order to help reduce the likelihood that the club head parts separate as a result of joint failure during use. In this case and, as for the more specific claimed values for the surface area of the laser-ablated bonding surface with respect to the crown-opening recessed ledge, the skilled artisan would have been able to calculate an acceptable surface area of the laser-ablated bonding surface using routine experimentation. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
As to claims 24-25, although the modified Bovee club head does not explicitly disclose that “the laser-ablated bonding surface has a surface area of at least 1,560 mm²” (claim 24) nor that “the laser-ablated bonding surface has a surface area of at least 2,062 mm²” (claim 25), in view of the arguments provided under claim 23 supra, and considering the teachings in Boggs, it would have been obvious to one of ordinary skill in the art and before the effective filing date of the claimed invention to have modified the club head in Bovee by providing that the laser-ablated bonding surface has a surface area as required by each of claims 24 and 25 in order to help reduce the likelihood that the club head parts separate as a result of joint failure during use. As for the more specific, claimed values surface area of the laser-ablated bonding surface, the skilled artisan would have been able to calculate an acceptable surface area of the laser-ablated bonding surface using routine experimentation. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
As to claim 31, the crown-opening recessed ledge extends continuously about an entirety of the periphery of the crown opening; and the laser-ablated bonding surface extends continuously along an entirety of the crown-opening recessed ledge. Here, the crown-insert laser-ablated bonding surface is formed in only an outer peripheral portion of the interior surface of the crown insert. As shown in FIG. 4B, 4D and 10B of Bovee, the attachment surface for the peripheral portion of the crown insert includes a perimeter portion of the body.
As to claim 32, in Bovee, a width of the forward portion of the crown-opening recessed ledge is greater than a width of a rearward portion of the crown-opening recessed ledge (i.e., paragraph [0113]).
Claim 26 is rejected under 35 U.S.C. 103 as being unpatentable over US PUBS 2018/0154224) to Bovee et al (hereinafter referred to as “Bovee”) in view of US PUBS 2019/0033231 to Connell et al (hereinafter referred to as “Connell”) and also in view of US PUBS 2010/0151960 to Wahl et al (hereinafter referred to as “Wahl”) and also in view of US PUBS 2008/0132356 to Chao et al (hereinafter referred to as “Chao”) and also in view of USPN 10,183,202 to Harbert et al (hereinafter referred to as “Harbert”) and also in view of US PUBS 2016/0346640 to Boggs et al (hereinafter referred to as “Boggs”).
As to claim 26, Bovee further comprises a strike face (109). However, Bovee does not explicitly detail “a total surface area of the strike face is at least 3,300 square millimeters (mm²) and less than 4,300 mm²”. Wahl show it to be old in the art to dimension a strike face with an area in a range of about 2,700 square millimeters (mm²) to about 5,000 mm² (i.e., paragraph [0075]). A larger strike face area expands the sweet spot and enables the club head designer to redistribute weight to peripheral portions of the club head. In view of the teaching in Wahl and the above reasoning, it would have been obvious to one of ordinary skill in the art and before the effective filing date of the claimed invention to have modified the club head in Bovee by providing a total surface area of the strike face is at least 3,300 square millimeters (mm²) and less than 4,300 mm²” in order to enlarge the sweet spot of the club head for improved club head performance.
Bovee also lacks the feature “the laser-ablated bonding surface has a surface area of at least 2,062 mm²”. Here, Boggs teaches that an acceptable bond strength between mating club head parts is achieved when the total surface area of the joint(s) among the various body sections is between 1300 mm² and 3000 mm², which represents the combined surface area of both surfaces of a front section and a rear section of a club head body when bonded together (i.e., paragraph [0036], [0040] and [0044] in Boggs). Essentially, Boggs may be construed as showing a surface area of the bonding surface as being between about 650 mm² to 1500 mm², which would account for the surface area of one of two surfaces of the front section or the rear section of the club head body bonded together. Here, Boggs makes it clear that an adequate bonding area helps reduce the chance of shear failure along the joint. In view of the teaching in Boggs, it would have been obvious to one of ordinary skill in the art and before the effective filing date of the claimed invention to have modified the club head in Bovee by providing that the laser-ablated bonding surface has a surface area of at least 2,062 mm² in order to help reduce the likelihood that the club head parts separate as a result of joint failure during use. In this case and, as for the more specific claimed values for surface area of the laser-ablated bonding surface with respect to the crown-opening recessed ledge, the skilled artisan would have been able to calculate an acceptable surface area of the laser-ablated bonding surface using routine experimentation. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Bovee also lacks “a total surface area of an exterior surface of the crown insert is at least 9,482 mm²”. Chao shows it to be old in the art to construct a wood-type club head with a crown surface area of between about 8,000 mm² to about 11,000 mm² (i.e., see paragraph [0089] in Chao). Moreover, the teaching in Harbert (i.e., see claim 16 of Harbert), teaches that a crown insert may account for up to 90% of the surface area of the crown surface. Using the crown surface area of 11,000 mm² provided by Chao, and taking into account 90% of this crown surface area leads to a crown insert area of 9,900 mm². Clearly, altering the surface area of the crown insert, especially when considering that the crown insert in the case of Bovee is made of a material having a lower density than the material that makes up the club head body, would have been obvious to one of ordinary skill in the art and before the effective filing date of the claimed invention and would have enabled the skilled artisan to control the amount of weight at the crown, while providing discretionary weight in other portions of the club head in order to adjust the location of the center of gravity for improved club head performance.
Claims 33-40 are rejected under 35 U.S.C. 103 as being unpatentable over US PUBS 2022/0184746 to Greaney et al (hereinafter referred to as “Greaney”) in view of US PUBS 2015/0196972 to Wohl, JR. et al (hereinafter referred to as “Wohl”).
Initially, it is once again noted that, in view of the observations hereinabove with respect to priority, the effective filing date of claims 33-40 has been established to be equal to the filing date of the parent 18/661,362 application, namely 05/10/2024. Here, dependent claim 33 includes subject matter first introduced into the disclosure via the 04/15/2025 preliminary amendment to the claims. See MPEP 2152.01. Dependent claims 34-40 depend either directly or indirectly from claim 33 and thus share the effective filing date of claim 33, namely 05/10/2024.
As to claim 33, Greaney shows every feature claimed with the exception of “an ablation pattern of peaks and valleys that comprises first paths spaced apart relative to each other and second paths spaced apart relative to each other and intersecting the first paths at spaced apart locations; each one of the first paths and the second paths has a depth, relative to the peaks, that varies along its length; and the depths of the first paths and the second paths are greater at the spaced apart locations where the first paths and the second paths intersect than where the first paths and the second paths do not intersect”.
Wohl teaches that the ablation depth “will depend on the spacing of topographical features, the dimensions of the features and the rigidity of the ablated material” (i.e., see paragraph [0025]). Thus, Wohl is essentially emphasizing that the depth is a result-effective variable. Wohl also teaches that laser ablation patterning may result in multiple first parallel lines transcribed in a surface of a substrate, with other second parallel lines transcribed in the surface, with at least some of the second parallel lines being oriented perpendicular to the first parallel lines, and thus essentially teaches first and second paths that are either intersecting and/or not intersecting (i.e., see paragraph [0031]). Given the teachings in Wohl, it would have been obvious to one of ordinary skill in the art and before the effective filing date of the claimed invention to have modified the device in Greaney by incorporating the features that the second-part ablation pattern of peaks and valleys comprises first paths spaced apart relative to each other; and second paths spaced apart relative to each other, and intersecting the first paths at spaced apart locations; each one of the first paths and the second paths has a depth, relative to the peaks, that varies along its length; and the depths of the first paths and the second paths are greater at the spaced apart locations where the first paths and the second paths intersect, with there being a reasonable expectation of success that the patterning provided to the ablated surface would have promoted enhanced adhesion between the first-part bonding surface and the second-part ablated bonding surface. It is further noted that claim 33 depends from claim 26, which depends from claim 22, which depends from claim 21. Thus, dependent claim 33 includes all of the limitations of claims 21, 22 and 26. Here, it is noted that Greaney shows all of the features recited in all of claims 21, 22 and 26 as follows:
As to claim 21, Greaney shows a golf club head (100), comprising: a body (102) comprising a crown opening (162) and a crown-opening recessed ledge (168) adjacent to and defining a periphery of the crown opening (162), wherein the crown-opening recessed ledge (168) is made of a metallic material and comprises a laser-ablated bonding surface along at least a forward portion of the crown-opening recessed ledge (i.e., paragraphs [0335] – [0338]); a crown insert (108) bonded to the laser-ablated bonding surface of the crown-opening recessed ledge via an adhesive (i.e., paragraph [0155]), wherein the crown insert is made of a fiber-reinforced polymeric material (i.e., paragraph [0051]); a flight control technology (FCT) system (i.e., paragraphs [0166] – [0167]); a mass receptacle (257; FIG. 17; paragraph [0215]) proximate to a rearward-most portion of the crown-opening recessed ledge; and a mass element (259) coupled to the mass receptacle (257) below the crown-opening recessed ledge and below a center of gravity (i.e., paragraphs [0159] and [0161]) of the golf club head (FIG. 17); wherein the crown-opening recessed ledge is non-planar (i.e., paragraph [0010]).
As to claim 22, a rearward-most portion of the crown-opening recessed ledge is formed of metal (i.e., paragraphs [0335] – [0338]) and noting titanium material).
As to claim 26, Greaney comprises a strike face, wherein: a total surface area of the strike face is at least 3,300 square millimeters (mm²) and less than 4,300 mm² (i.e., paragraph [0128]); the laser-ablated bonding surface has a surface area of at least 2,062 mm² (i.e., paragraph [0055]); and a total surface area of an exterior surface of the crown insert (108) is at least 9,482 mm² (i.e., paragraph [0162]).
As to claim 34, Greaney does not explicitly disclose “the depths of the first paths and the second paths, at the spaced apart locations where the first paths and the second paths intersect, are at least 1.5 times the depths of the first paths and the second paths where the first paths and the second paths do not intersect”. Wohl teaches that the ablation depth “will depend on the spacing of topographical features, the dimensions of the features and the rigidity of the ablated material” (i.e., see paragraph [0025]). Thus, Wohl is essentially emphasizing that the depth is a result-effective variable. Given the teachings in Wohl, it would have been obvious to one of ordinary skill in the art and before the effective filing date of the claimed invention to have modified the device in Greaney by incorporating the feature that the depths of the first paths and the second paths, at the spaced apart locations where the first paths and the second paths intersect, are at least 1.5 times the depths of the first paths and the second paths where the first paths and the second paths do not intersect, with there being a reasonable expectation of success that the patterning provided to the ablated surface would have promoted enhanced adhesion between the first-part bonding surface and the second-part ablated bonding surface. Here, the specific distinction between the depth at locations where the first and second paths intersect vs. the depth at locations where the first and second paths do not intersect would have been attainable through an “obvious to try approach”. KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007). See MPEP 2144.05.
As to claim 35, initially, Greaney discloses the claimed depth range (i.e., paragraph [0296] in Greaney), with a depth varying between, and inclusive of, 5 micrometers and 100 micrometers. Although Greaney does not explicitly address the range for the depth with respect to the “first paths and the second paths”, associating the claimed range for the depth with the first and second paths would have been obvious to one of ordinary skill in the art and before the effective filing date of the claimed invention for improved adhesion between the first part and the second part, given that Wohl teaches that the ablation depth “will depend on the spacing of topographical features, the dimensions of the features and the rigidity of the ablated material” (i.e., see paragraph [0025]). Thus, Wohl is essentially emphasizing that the depth is a result-effective variable. Thus, the varying depth of the first paths and the second paths would have been attainable through an “obvious to try approach”. KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007). See MPEP 2144.05.
As to claim 36, initially, Greaney discloses the claimed depth range (i.e., paragraph [0296] in Greaney), with a depth varying between, and inclusive of, 20 micrometers and 50 micrometers. Although Greaney does not explicitly address the range for the depth with respect to the “first paths and the second paths”, associating the claimed range for the depth with the first and second paths would have been obvious to one of ordinary skill in the art and before the effective filing date of the claimed invention for improved adhesion between the first part and the second part, given that Wohl teaches that the ablation depth “will depend on the spacing of topographical features, the dimensions of the features and the rigidity of the ablated material” (i.e., see paragraph [0025]). Thus, Wohl is essentially emphasizing that the depth is a result-effective variable. Thus, the varying depth of the first paths and the second paths would have been attainable through an “obvious to try approach”. KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007). See MPEP 2144.05.
As to claim 37, each one of the peaks is interposed between a corresponding two of the first paths and between a corresponding two of the second paths (i.e., paragraph [0308] in Greaney).
As to claim 38, in Greaney, each one of the peaks and each one of the valleys has a substantially circular or oval outer peripheral shape (i.e., paragraph [0309]).
As to claim 39, in Greaney, the golf club head further comprises an interior cavity and a hosel having a hosel bore; and the hosel bore provides access to the interior cavity (i.e., paragraph [0167]).
As to claim 40, in Greaney, at least a portion of the crown-opening recessed ledge extends forward of a portion of the FCT system (i.e., see FIGS. 12 and 14).
Further References of Interest
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
De Shiell (’30) shows a ledge in a crown along with an insert;
Paulauskas discusses laser ablation;
Harbert shows an arrangement of weights and weight receptacles; and
See FIG. 15B in Evans.
Conclusion
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SEBASTIANO PASSANITI
Primary Examiner
Art Unit 3711
/SEBASTIANO PASSANITI/Primary Examiner, Art Unit 3711
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